In Thailand, the scope of invention protection falls under the governance of the Thai Patent Act B.E. 2522, which encompasses both patents and petty patents. These classifications are contingent upon the complexity of the invention and the number of claims for protection. However, these patent types also vary in terms of the examination process and the duration of their protection period. Consequently, applicants may consider converting their applications type during formal examination stage between patents and petty patents, as stipulated in section 65 quarter:
“The applicant for a petty patent or the applicant for an invention patent may request to convert his application for a petty patent to an application for an invention patent or an application for an invention patent to an application for a petty patent before the registration of the invention and the grant of the petty patent or before the publication of the application under Section 28, as the case may be. The applicant may claim the date of filing of the original application to be the filing date of the converted application in accordance with the rules and procedures prescribed in the Ministerial Regulations.”
Factors to consider
- Cost considerations: Petty patents typically entail lower application fees and maintenance costs compared to patents. This can significantly reduce the financial burden for applicants seeking protection for their innovations, especially in cases where cost management is a priority.
- Scope and duration of protection: The choice between a patent and a petty patent determines the level of protection for the invention. Patents provide broader coverage, allowing for a wider range of claims and stronger enforceability. Conversely, petty patents offer narrower protection, with claims restricted, typically not exceeding 10. Moreover, patents offer longer protection compared to petty patents. If an applicant initially opts for a petty patent but later realizes the greater potential value of their invention, they can convert their application to a patent to ensure comprehensive protection and exclusive rights.
- Examination period: Petty patents offer a shorter processing period due to simplified requirements and the absence of substantive examination. This process can be advantageous for applicants aiming to secure intellectual property rights swiftly, particularly in fast-paced industries or competitive markets, enabling quicker access to legal protection for their inventions.
Filing a conversion request
The request must be submitted along with the necessary documents before the patent application is published under section 28 or before the petty patent is granted. Within the request, the applicant must specify whether to retain the original filing date or amend it to match the conversion request date. An official fee of 100 baht is associated with this process.
After the DIP officer receives and acknowledges the request, a new application number will be generated to align with the newly designated patent type, which typically takes a few months to process.
Required documents
- Conversion request form (SorPor/OrSorPor/004-Kor)
- Supporting documents such as the Statement of Applicant Right (SAR) or Deed of Assignment (DOA). Previously submitted copies of these documents, affixed with a certified copy stamp, may be reused.
- Application form along with specification, claims, abstract and drawings (if any). In case of conversion from patent to petty patent, if the number of original claims filed was more than 10, it must be reduced to not exceed 10 claims for petty patent.
Reference: User’s guide to filing applications for patents and petty patents https://www.ipthailand.go.th/th/patent-0110.html
